Case 2:22-md-03034-TGB ECF No. 81, PageID.2528 Filed 09/14/22 Page 1 of 31
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION
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`
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`In Re: Neo Wireless, LLC,
`Patent Litigation
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` Case No. 2:22-md-03034-TGB
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` Hon. Terrence G. Berg
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`JOINT RULE 26 REPORT AND PROPOSED SCHEDULING ORDER
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`Pursuant to Rule 26(f) of the Federal Rules of Civil Procedure, the parties to this case, by
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`and through their respective counsel, jointly submit this Rule 26(f) Report and Proposed
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`Scheduling Order:
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`Initial Disclosures
`Fact Discovery Commences
`Infringement Contentions1
`Invalidity Contentions
`Deadline to Amend Pleadings
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`The Parties’ Joint Proposal
`Wednesday, September 14, 2022
`Wednesday, August 10, 2022
`Wednesday, September 28, 2022
`Wednesday Nov. 16, 2022
`Friday, December 16, 2022
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`
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`1 The Parties agree to address all non-burden contentions (e.g., non-infringement contentions)
`through traditional discovery requests. The parties further agree that they may jointly modify the
`schedule upon agreement of all parties to the extent such modifications do not impact the timing
`for filing of claim construction briefs; claim construction hearing; or dispositive motion
`deadlines. Modification to the timing for filing of claim construction briefs; claim construction
`hearing; or dispositive motion deadlines shall require an order of the Court.
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`1
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2529 Filed 09/14/22 Page 2 of 31
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`Deadline to Add Parties
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`
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`Contact Technical Advisor to Schedule
`Settlement Conference (Court)
`Initial Identification of Disputed Claim Terms
`Exchange Proposed Interpretations of Disputed
`Claim Terms
`Final Identification of Disputed Claim Terms
`Informal Technology Tutorial (Court)
`Plaintiff’s Opening Claim Construction Briefs
`Defendant’s Responsive Claim Construction
`Brief
`Plaintiff’s Reply Claim Construction Brief
`Claim Construction Hearing (Court) (2-3 months
`from deadline of Plaintiff’s Reply Claim
`Construction Brief)
`Deadline for Parties to Amend Contentions
`Fact Discovery Closes
`Expert Reports on Infringement (Plaintiff),
`Invalidity (Defendant), and Damages (Plaintiff)
`Rebuttal Expert Reports
`Expert Discovery Deadline
`Dispositive Motion Deadline
`Oppositions to dispositive motions
`Replies to dispositive motions
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`The Parties’ Joint Proposal
`Plaintiff’s Proposal: December 16, 20222
`Defendants’ Proposal: September 30,
`20223
`TBD
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`Thursday, December 1, 2022
`Wednesday, December 15, 2022
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`Wednesday, January 18, 2023
`TBD
`Thursday, February 16, 2023
`Thursday, March 16, 2023
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`Thursday, March 30, 2023
`TBD
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`1 Month after Markman Order
`10 Weeks after Markman Order
`14 Weeks after Markman Order
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`18 Weeks After Markman Order
`22 Weeks after Markman Order
`26 Weeks after Markman Order
`21 days from filing
`14 days from oppositions
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`
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`2 Plaintiff’s argument: Neo contends that the deadline to add parties and the deadline to amend
`pleadings should go hand in hand, and occur after at least some early discovery has taken place.
`Neo does not currently expect to add any additional unaffiliated defendants to the case, but may
`need to ensure that all proper parties affiliated with the existing defendants have been sued.
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`3 Defendants’ argument: Defendants contend that the deadline to add parties should be the end of
`September. This case already has numerous Defendants and parties, and waiting until December
`to add additional parties is almost certain to disrupt the case schedule and potentially require the
`parties to revisit contentions and/or claim construction disclosures.
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`2
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2530 Filed 09/14/22 Page 3 of 31
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`I.
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`RULE 26(f) CONFERENCE
`Pursuant to Rule 26(f), the parties held an initial meeting on August 10, 2022, which was
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`attended by attorneys from all parties as set forth in the signature blocks below.
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`II.
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`DISCOVERY PLAN
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`The discovery in this case is limited to the disclosures described in the following
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`paragraphs. Where a limit is defined by Defendant that limit shall apply to a group of legally
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`affiliated Defendants.
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`a.
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`Interrogatories. Plaintiff may serve up to 25 interrogatories on each
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`Defendant. Defendants may serve 15 joint interrogatories on Plaintiff, and
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`each party Defendant may serve 10 individualized interrogatories on
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`Plaintiff. Individualized interrogatories may not be used by Defendants to
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`indirectly increase the number of joint interrogatories. [Plaintiff’s
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`Proposal:4 To that end, Neo’s response to an individualized interrogatory
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`may only be used in the case involving the Defendant that served it.]5
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`4 Plaintiff’s Argument: Defendants agree that, in principle, individual interrogatories cannot be
`used to indirectly multiply Defendants’ joint interrogatories. But the only clear way to enforce
`this normative rule is to prevent one defendant from using another’s individual interrogatories in
`its own case. Otherwise, even without explicit collusion in the subject matter of individual
`interrogatories, defendants could stagger the service of their individual interrogatories, review
`the first set, and subsequently serve completely distinct requests, effectively achieving what they
`have agreed should not be done. Plaintiff’s proposal mitigates this potential abuse of process.
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`5 Defendants’ Argument: As set forth in the agreed-upon text, Defendants have committed that
`“[i]ndividualized interrogatories may not be used to . . . indirectly increase the number of joint
`interrogatories.” Plaintiff’s additional request that interrogatories can only be used in a single
`case conflicts with the Federal Rules (requiring the production of relevant information, including
`party admissions) as well as being unworkable for purposes of joint expert reports and joint
`briefing on dispositive issues. For example, FRCP 5(a)(1) requires “each of the following papers
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`3
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2531 Filed 09/14/22 Page 4 of 31
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`b.
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`Requests for Admission. Plaintiff may serve up to 40 requests for
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`admission on each party Defendant. Defendants shall serve 20 joint requests
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`for admission on Plaintiff, and each party Defendant may serve 20
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`individualized requests for admission on Plaintiff. This limit does not apply
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`to requests for admission that seek an admission as to the authenticity of a
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`document or thing. Such requests for admission as to authenticity will be
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`unlimited, clearly denoted as such, and served separately from other
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`requests for admission. Individualized requests for admission may not be
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`used by Defendants to indirectly increase the number of joint requests.
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`[Plaintiff’s Proposal:6 To that end, Neo’s response to an individualized
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`request for admission may only be used in the case involving the Defendant
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`that served it.]7
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`c.
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`Depositions.
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`i.
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`Party Witnesses: Plaintiff may take up to [Plaintiff’s Proposal:8
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`must be served on every party: … a discovery paper required by served on a party, unless the
`court orders otherwise,” and all Defendants are parties to the MDL case. To the extent that
`Plaintiff believes Defendants’ requests violate the spirit of the parties agreements down the line,
`it can raise the issue with the Court at that time.
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`6 Plaintiff’s Argument: Neo proposes this limitation for the same reasons as set forth regarding
`interrogatories.
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`7 Defendants’ Argument: Defendants oppose the limitation for the same reasons as set forth
`regarding interrogatories.
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`8 Plaintiff’s Argument: Under Federal Rule of Civil Procedure 30, the default rule is that a party
`is entitled to at least ten 7-hour depositions (70 hours) in an individual case. While Neo will be
`as efficient as possible with its depositions, Plaintiff’s 100-hour proposal reflects the size and
`complexity of this six-patent case. Moreover, Defendants’ proposal to significantly reduce the
`number of hours Plaintiff is legally entitled to is illogical and improper where Plaintiff must bear
`the burden of proving its case against each individual Defendant. There will not be any overlap
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`4
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2532 Filed 09/14/22 Page 5 of 31
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`100/Defendant’s Proposal: 359] hours of 30(b)(1) or 30(b)(6)
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`depositions
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`from each party Defendant. Defendants may
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`collectively take 100 hours of 30(b)(1) or 30(b)(6) depositions from
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`Plaintiff. Defendants must take all reasonable efforts to avoid
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`duplicative
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`questioning
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`against
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`Plaintiff’s
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`witnesses.
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`Notwithstanding the foregoing, the deposition of any single fact
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`witness will be limited to 7 hours unless that witness is cross-noticed
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`in multiple cases, then the deposition will be limited to 7 hours plus
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`an additional 2 hours per additional case for which the witness was
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`cross-noticed up to a maximum of 14 hours. If either side believes
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`that additional time with a particular witness is necessary, the parties
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`shall meet and confer in good faith in order to reach an agreement.
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`ii.
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`Third Party Witnesses: The deposition of any single third-party
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`in the subject matter of plaintiff’s depositions of separate defendants that would justify such a
`reduction. Defendants’ reference to the cumulative number of 900 deposition hours is a red
`herring—each individual defendant will only bear the burden of its own depositions.
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`9 Defendants’ Argument: As the MDL Panel stated in its centralization order, these cases “can
`be expected to share factual questions concerning such matters as the technology underlying the
`patents, prior art, claim construction, and/or issues or infringement involving the patents.”
`Plaintiff seeks to undercut much of this discovery benefit by demanding nearly 50% more
`deposition hours than the Federal Rules allow. The Court should not permit this. Rather, the
`Court should adopt a more efficient approach to deposition discovery for at least two reasons.
`First, as set forth in Plaintiff’s complaints, this case concerns allegations against certain LTE and
`5G standards. Plaintiff’s claims do not appear to be based on any specific implementation by
`any Defendant, and instead read against the standard itself. As such, there is no reason to burden
`Defendants with 100 hours of depositions per party-Defendant, as 35 hours should be more than
`sufficient for Neo to establish its claim. Notably, Plaintiff’s proposal would result in 900 hours
`of deposition, resulting in 128.6 total deponents at a 7-hour per deponent rate, which is unduly
`burdensome. And second, much of the technical implementation details relating to Plaintiff’s
`claims are likely to be in the hands of third-party suppliers, rather than Defendants, which also
`weighs in favor of a more streamlined approach to party depositions.
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`5
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2533 Filed 09/14/22 Page 6 of 31
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`witness will be limited to 7 hours absent leave of Court or written
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`agreement of the parties and the witness or designating entity.
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`iii.
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`Expert Witnesses: No more than 7 hours of expert witness
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`deposition testimony may be taken by each side for each disclosed
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`expert witness who provides a report, except that if such a witness
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`submits testimony in multiple reports (e.g., infringement and
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`validity or multiple infringement reports), submits an infringement
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`or non-infringement report for more than one defendant party (e.g.,
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`alleging infringement or non-infringement by multiple defendant
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`groups), or submits a report that responds to multiple reports, the
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`limit will be 7 hours plus [Plaintiff’s Proposal:10 4 hours for each
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`additional report and 1 hour per additional infringement defendant
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`up to a maximum of 14 hours/Defendant’s Proposal: 4 hours for
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`each report or party, up to a maximum of 21 hours.11]
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`iv.
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`Interpreters and Translators: Any deposition requiring the use of
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`an interpreter or translator may be up to 10.5 hours (subject to the
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`
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`10 Plaintiff’s Argument: Defendants have generally agreed to make reasonable efforts to avoid
`duplicative questioning of witnesses; if they stick to that, there is no way a defendant will need
`four additional hours to question an infringement expert simply because the expert offered
`similar infringement opinions—based on identical infringement allegations—about two or more
`separate defendants. If defendants avoid duplicative questioning, plaintiff’s proposal is more
`than adequate time for even the most complex expert report, and defendants’ 21-hour proposal
`would just invite redundancy and impose undue burden on a witness.
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`11 Defendants’ Argument: Plaintiff has elected to bring suit against a large number of Defendants
`at the same time. While 14 hours may be sufficient in a case against one or two Defendants, it is
`impracticable when a multitude of Defendants are involved, as Plaintiff’s proposal would only
`allow 1.6 hours per Defendant should an expert address a report to all parties.
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`6
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2534 Filed 09/14/22 Page 7 of 31
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`parties’ agreements in Sections 2(c) i-iii) such that a 7 hour
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`deposition under Federal Rule of Civil Procedure 30(d)(1) would
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`instead be limited to 10.5 hours. A deposition using a translator
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`counts for 2/3 time in relation to limits, such that a 10.5 hour
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`deposition would be counted as 7 hours of time. The deposition can
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`be split over two days at the election of the producing party or
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`producing non-party.
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`III.
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`SUBJECTS AND NATURE OF DISCOVERY
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`A.
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`DISCOVERY BY PLAINTIFF
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`Plaintiff anticipates seeking discovery on at least the following topics: (1) the structure,
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`function, and operation of the accused products; (2) the development of the allegedly infringing
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`features; (3) the importance of those features to the operation and performance of the accused
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`products; (4) issues relating to damages, including the importance of the patented features to
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`Defendants’ customers and Defendant’s sales and profits realized for the accused products and any
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`ancillary sales made as a result of the accused products; (5) the factual basis for Defendants’
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`defenses; (6) claim construction of the patents-in-suit; (7) Defendants’ knowledge of the patents-
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`in-suit and efforts to avoid infringement; and (8) factual basis of Defendants’ beliefs that the
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`patents-in-suit are invalid or not infringed. Plaintiff further anticipates taking discovery from third
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`parties, including third-party carriers and third-party manufacturers of components incorporated
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`into the accused products.
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`B.
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`DISCOVERY BY DEFENDANT
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`Defendants anticipate seeking discovery on at least the following topics: (1) the factual
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`basis for Plaintiff’s allegations, including infringement, willful infringement, validity, and
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`7
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`damages; (2) the patents-in-suit and the prosecution history of the patents-in-suit and related
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`patents, including records created during inter partes review proceedings involving the patents-in-
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`suit and any related patents; (3) the conception, reduction to practice, research, development, and
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`use of the alleged inventions claimed in the patents-in-suit; (4) the prior art to the asserted patents;
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`(5) the ownership of the patents-in-suit; (6) the implementation (if any) of the patents-in-suit in
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`the LTE standard or 5G standard; (7) compliance with and/or agreements pertaining to
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`commitment(s) to license the asserted patents on fair, reasonable, and non-discriminatory terms;
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`(8) communications and agreements between Neo (and any predecessors) and third parties
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`regarding the patents-in-suit, including settlement agreements; (9) pleadings, documents,
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`discovery, and transcripts from other proceedings involving the asserted patents or related patents,
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`and (10) any valuation of the patents-in-suit.
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`C.
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`ELECTRONICALLY STORED INFORMATION
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`The parties agree to take reasonable steps to preserve potentially relevant ESI. A party’s
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`meaningful compliance with this Order and efforts to promote efficiency and reduce costs will be
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`considered in cost-shifting determinations.
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`Absent agreement of the parties or further order of this Court, the following parameters
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`shall apply to ESI production:
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`a.
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`General Document Image Format. Each electronic document shall be
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`produced in single-page Tagged Image File Format (“TIFF”) format, where
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`possible. For example, it is understood that TIFF formatting may in some
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`instances only be possible for black and white images and not color images.
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`TIFF files shall be single page and shall be named with a unique production
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`number followed by the appropriate file extension, where possible. Load
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`8
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`files shall be provided to indicate the location and unitization of the TIFF
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`files. If a document is more than one page, the unitization of the document
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`and any attachments and/or affixed notes shall be maintained as they existed
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`in the original document.
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`b.
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`Text-Searchable Documents. The parties will provide document-level
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`searchable text for all produced documents. Electronically extracted text
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`shall be provided if available for all documents collected from electronic
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`sources. Text generated via Optical Character Recognition (“OCR”) shall
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`be provided for documents originally maintained in hard copy, redacted
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`documents, and electronic documents that do not contain electronically
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`extractable text (e.g. non-searchable PDF documents and image files).
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`c.
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`Footer. Each document image shall contain a footer with a sequentially
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`ascending production number.
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`d.
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`Native Files. A party that receives a document produced in a format
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`specified above may make a reasonable request to receive the document in
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`its native format, and upon receipt of such a request, the producing party
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`shall produce the document in its native format. The parties agree that .xls
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`and .csv files will not be converted to another format and instead will be
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`produced natively without a specific request for native production, absent
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`good cause to produce in another format.
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`e.
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`No Backup Restoration Required. Absent a showing of good cause, no
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`party need restore any form of media upon which backup data is maintained
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`in a party’s normal or allowed processes, including but not limited to backup
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`9
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`tapes, disks, SAN, and other forms of media, to comply with its discovery
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`obligations in the present case.
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`f.
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`Load Files. Metadata load files will contain the applicable fields listed in
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`Exhibit A, if available based on reasonable collection efforts.
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`
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`A party is only required to produce a single copy of a responsive document and a party
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`may de-duplicate identical responsive ESI (based on MD5 or SHA-1 hash values at the family
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`level) across custodians. To the extent that de-duplication through MD5 or SHA-1 hash values is
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`not possible, or to the extent that population of the above fields is not possible or practicable, the
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`parties shall meet and confer to discuss any other proposed method of de-duplication.
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`
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`Email Discovery: Normal ESI discovery shall not include discovery of e-mail records. E-
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`mail discovery shall initially be limited to dedicated searches of two custodians per party,
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`according to the framework set forth below. Beyond that, no further e-mail discovery shall be
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`permitted absent agreement of the parties, or a showing of good cause and order of the court. To
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`the extent a party believes additional e-mail discovery is necessary, the parties shall meet and
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`confer at that point regarding the need for and the least burdensome method of obtaining those
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`additional e-mail records. By way of example, good cause for additional e-mail discovery will
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`exist where a party selectively produces or intends to rely on e-mails that were not captured by the
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`opposing side’s initial e-mail production requests (“cherry picking”), thus entitling the opposing
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`side to collect any additional relevant emails from that custodian.
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`The parties’ initial e-mail production requests shall be phased to occur timely after the
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`parties have exchanged initial disclosures, a specific identification of the most significant e-mail
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`custodians in view of the pleaded claims and defenses, infringement contentions and
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`accompanying documents, invalidity contentions and accompanying documents, and preliminary
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`10
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`information relevant to damages (including but not limited to a party’s likely 30(b)(6) designees).
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`The exchange of this information shall occur at the time required under the Federal Rules of Civil
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`Procedure, Local Rules, or by order of the court.
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`E-mail production requests shall identify the custodian, search terms, and time frame. The
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`parties shall cooperate to identify the proper custodians, proper search terms, and proper time
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`frame. Each side shall limit its initial e-mail production requests to a total of two custodians per
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`party for all such requests. (In other words, Plaintiff may choose two custodians per Defendant
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`group, and Defendants may collectively choose two custodians for Plaintiff.)
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`Upon receipt of an email request identifying a custodian, the producing party may either
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`use search terms, or use targeted collections and custodial interviews to locate responsive
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`materials, in either case in a good faith effort to locate all ESI responsive to any document request
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`served by the opposing side, and the producing party shall disclose the search terms or method of
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`collection to the requesting party. After production of the responsive ESI via either method, the
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`requesting side may propose a total of four additional search terms per custodian per producing
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`party. The search terms shall be narrowly tailored to particular issues. Indiscriminate terms, such
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`as the producing company’s name or its product name, are inappropriate unless combined with
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`narrowing search criteria that sufficiently reduce the risk of overproduction. A conjunctive
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`combination of multiple words or phrases (e.g., “computer” and “system”) narrows the search and
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`shall count as a single search term. A disjunctive combination of multiple words or phrases (e.g.,
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`“computer” or “system”) broadens the search, and thus each word or phrase shall count as a
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`separate search term unless they are variants of the same word or translations of the same word.
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`Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the
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`11
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`production and shall be considered when determining whether to shift costs for disproportionate
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`discovery.
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`The parties agree to negotiate regarding e-mail production requests in good faith. To this
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`end, the producing party shall provide ESI Search Reports (to the extent applicable) identifying
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`the number of hits per search term, the custodians run against each set of terms, date ranges for the
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`searches, and the actual terms used to the extent they differ from the e-mail production request due
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`to a party’s technical capability.
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`To the extent that a party produces documents written in a language other than English,
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`that party shall also produce any English translations (whether certified, machine, or informal) that
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`are in its care, custody, or control.
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`Privilege Logs: The Parties will exchange privilege logs at a date to be agreed upon later,
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`once document productions are substantially complete. Privileged or work-product protected
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`communications that post-date the filing of the complaint in this litigation, involve counsel, and
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`directly concern this litigation or inter partes reviews involving the asserted patents need not be
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`identified on a privilege log. Similarly, privileged or work-product protected communications from
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`prior litigation involving the patents-in-suit need not be identified on a privilege log. A party need
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`include only one entry on the log (including the names of all of the recipients of the
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`communications) to identify withheld emails that constitute an uninterrupted dialogue between or
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`among individuals, provided that all participants to any portion of such dialogue shall be included
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`in the log entry if the log entry reflects more than one email. The parties shall also log any redacted
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`documents and identify those document(s) by Bates number in the respective log entry(ies).
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`Pursuant to Federal Rule of Evidence 502(d), the inadvertent production of privileged or
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`work product protected ESI is not a waiver in the pending case or in any other federal or state
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`12
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`proceeding. The receiving party shall not use ESI that the producing party asserts is attorney-client
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`privileged or work product protected to challenge the privilege or protection. The mere production
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`of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.
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`The foregoing provisions do not otherwise modify the treatment of inadvertently produced
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`material under the agreed Protective Order.
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`IV. DISCOVERY SCHEDULE
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`A.
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`FACT DISCOVERY
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`Fact discovery commenced on August 10, 2022. All written discovery requests shall be
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`served no later than 30 days prior to the close of fact discovery. Discovery shall include any
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`relevant opinions of counsel if Defendants intend to rely upon an opinion of counsel as a defense
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`to a claim of willful infringement.
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`B.
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`RULE 26(a)(1) INITIAL DISCLOSURES
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`The parties exchanged the initial discovery disclosures required by Rule 26(a)(1) by
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`September 14, 2022.
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`[Defendant’s Proposal:1213 As a supplement to Plaintiff’s initial disclosures, to be served
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`by September 30, 2022, Plaintiff shall disclose Plaintiff’s position regarding which of the asserted
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`12 Plaintiff’s Argument: The Model Order and Federal Rules adequately govern the Parties’
`Initial Disclosures. Defendants’ proposal imposes one-sided obligations upon Plaintiff that are
`discoverable through traditional discovery, in order to circumvent Defendants’ discovery request
`limitations—limitations that already allow Defendants to serve a total of 115 interrogatories.
`Defendants’ additions should be rejected.
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`13 Defendants’ Argument: Plaintiff’s claims allege that the use of certain LTE or 5G standards
`infringe Plaintiff’s patents. As such, understanding Plaintiff’s essentiality allegations as it relates
`to those standards, as well as any FRAND obligations Plaintiff contends that it is (or is not)
`bound by is critical to understanding Plaintiff’s case and facilitating an orderly claim
`construction process. Requiring disclosure of this information early in the case is necessary in
`advance of claim construction, rather than waiting until later in the case.
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`13
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`patents it considers “LTE standard essential” or 5G standard essential; all information related to
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`Plaintiff’s compliance with and/or agreements pertaining to its commitment to license the asserted
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`patents on fair, reasonable, and non-discriminatory (FRAND) terms (this obligation extends to any
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`prior owners of the asserted patents); Plaintiff’s licenses; Plaintiff’s settlement agreements
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`concerning the patents-in-suit or any related patent; and all agreements and documents pertaining
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`to the chain of title of the asserted patents.]
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`C.
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`DEADLINE TO ADD PARTIES
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`The deadline for adding parties is [Plaintiff’s Proposal: December 16, 202214/Defendant’s
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`Proposal: September 30, 202215]. The deadline for amending the pleadings is December 16, 2022.
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`D.
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`DISCLOSURE OF INFRINGEMENT CONTENTIONS
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`The patentee must file and serve disclosures of [Defendant’s Proposal:1617 and an initial
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`document production that identifies, as specifically as possible,] the following information by
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`September 28, 2022:
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`a. Each patent claim that is allegedly infringed by each opposing party.
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`14 Plaintiff’s Argument: See footnote 2.
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`15 Defendants’ Argument: See footnote 3.
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`16 Plaintiff’s Argument: Plaintiff’s argument applies to all of Defendants’ proposals under
`Subsection D, Disclosure of Infringement Contentions. Plaintiff disagrees with Defendants’
`inclusion of additional disclosure requirements, and believes the Court’s model Rule 26(f) plan
`provides adequate requirements to put the parties on notice of each other’s primary claims and
`defenses. Similarly, Defendant’s proposal again imposes one-sided obligations upon Plaintiff
`that are discoverable through traditional discovery, to circumvent Defendants’ discovery
`limitations—limitations that already allow Defendants to serve a total of 115 interrogatories.
`Defendants’ additions should be rejected.
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`17 Defendants’ Argument: See footnote 13. For each of the proposals in Subsection D, the
`information is necessary to gaining an understanding of Plaintiff’s infringement claims in this
`case.
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`14
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2542 Filed 09/14/22 Page 15 of 31
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`b. For each asserted claim, the accused product of each opposing party of which the
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`patentee is aware. This identification shall be as specific as possible. Plaintiff shall
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`identify each accused product by name or model number, if known.
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`c. A chart identifying specifically where each limitation of each asserted patent claim
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`is found within each accused product, including for each limitation that such party
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`contends is governed by 35 U.S.C. § 112 ¶ 6, the identity of the structure(s), act(s),
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`or material(s) in the accused product that performs the claimed function.
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`[Defendant’s Proposal: If the patentee alleges the patent is standard essential,
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`plaintiff must provide a chart identifying for each limitation of each asserted patent
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`claim specifically which standard the patent is essential to, including which
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`version(s) and explain how the claims are mandatory to the standard].
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`d. Whether each claim limitation of each asserted claim is claimed to be literally
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`present or present under the doctrine of equivalents in the accused product.
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`[Defendant’s Proposal: For any claim under the doctrine of equivalents, the
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`contentions must include an explanation of each function, way, and result that is
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`equivalent and why any difference are not substantial].
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`e. [Defendant’s Proposal: For each claim that is alleged to be indirectly infringed, an
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`identification of any direct infringement and a description of the acts of the alleged
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`indirect infringer that contribute to or are inducing that direct infringement. If
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`alleged direct infringement is based on joint acts of multiple parties, the role of each
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`such party in the direct infringement must be described;
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`f. for any patent that claims priority to an earlier application, the priority date to which
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`each asserted claim allegedly is entitled;
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`15
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`Case 2:22-md-03034-TGB ECF No. 81, PageID.2543 Filed 09/14/22 Page 16 of 31
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`g. identification of the basis for any allegation of willful infringement;
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`h. if a party claiming patent infringement wishes to preserve the right to rely, for any
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`purpose, on the assertion that its own or its licensee’s apparatus, product, device,
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`process, method, act, or other instrumentality practices the claimed invention, the
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`party must identify, separately for each asserted patent, each such apparatus,
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`product, device, process, method, act, or other instrumentality that incorporates or
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`reflects that particular claim, including whether it is marked (actually or virtually)
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`with the patent number; and
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`i. Production of a complete copy of the file histories for the patents-in-suit, including
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`related patents claiming priority from either the patents-in-suit or their parents,
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`foreign equivalents and their file histories.]
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`E.
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`DISCLOSURE OF INVALIDITY CONTENTIONS
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`Any party asserting invalidity or unenforceability claims/defenses must file and serve
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`disclosures and initial document production containing the following by Novembe